Booking.com B.V. v. United States Patent and Trademark Office
278 F. Supp. 3d 891 (2017)
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Rule of Law:
A trademark consisting of a generic term combined with a top-level domain (TLD) like '.com' is not automatically generic. Such a combination is typically a descriptive mark that is eligible for trademark protection upon a sufficient showing of acquired distinctiveness, or secondary meaning.
Facts:
- Booking.com B.V. is a company that has offered online hotel reservation services since 1996.
- From 1996 until June 2006, the company operated under the mark 'BOOKINGS'.
- In June 2006, the company modified its mark to 'BOOKING.COM' and has provided services under that name continuously since then.
- The company offers online hotel reservation services (Class 43) and travel agency services for transportation and tours (Class 39) under the 'BOOKING.COM' mark.
- Booking.com has engaged in extensive advertising, resulting in billions of visual impressions from U.S. customers through television, internet, and movie theater campaigns.
- The company has achieved significant commercial success, with U.S. customers conducting billions of dollars worth of transactions annually.
- The 'BOOKING.COM' brand has received extensive unsolicited media coverage, with hundreds of news articles referencing it each year.
Procedural Posture:
- Booking.com B.V. filed four federal trademark applications with the United States Patent and Trademark Office (USPTO) for the mark 'BOOKING.COM' for services in Class 39 (travel agency) and Class 43 (hotel reservations).
- The USPTO examining attorney initially rejected the applications, finding the mark 'merely descriptive.'
- After Booking.com argued the mark had acquired distinctiveness, the examiner issued a new refusal, finding the mark 'generic,' or alternatively, descriptive but lacking acquired distinctiveness.
- Booking.com appealed the refusals to the USPTO's Trademark Trial and Appeal Board (TTAB).
- The TTAB, in three separate opinions, affirmed the examiner's refusals, holding that 'BOOKING.COM' is generic for the services offered.
- Booking.com filed a civil action in the U.S. District Court for the Eastern District of Virginia to challenge the TTAB's decision.
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Issue:
Is a proposed trademark that combines a generic term with a top-level domain, such as 'BOOKING.COM,' automatically generic and therefore ineligible for trademark protection?
Opinions:
Majority - United States District Court for the Eastern District of Virginia
No. A proposed trademark that combines a generic term with a top-level domain is not automatically generic; rather, it is a descriptive mark that can become eligible for trademark protection if it acquires distinctiveness. The court reasoned that while the word 'booking' is generic for reservation services, the addition of the TLD '.com' creates a unique domain name that has source-identifying significance, similar to a unique telephone number. Unlike a corporate designator like 'Co.', a TLD indicates a single, unique source on the internet. Therefore, the mark 'BOOKING.COM' is descriptive, not generic, because it describes services involving booking that are available at a specific domain name. The burden then shifts to the applicant to prove acquired distinctiveness. Based on strong evidence, including a consumer survey showing 74.8% of respondents identified BOOKING.COM as a brand name, extensive advertising, and massive sales success, the court found the mark had acquired distinctiveness for hotel reservation services (Class 43). However, it found the evidence was insufficient to establish acquired distinctiveness for the broader travel agency services (Class 39).
Analysis:
This decision established a significant precedent for internet-based trademarks by rejecting a per se rule that 'generic.com' marks are unregistrable. By classifying such marks as descriptive rather than generic, the court shifted the legal inquiry from automatic refusal to a fact-intensive analysis of acquired distinctiveness. This opens the door for other well-known online brands with generic-sounding domain names to secure federal trademark protection if they can prove strong consumer recognition. The case also underscores the critical role of consumer survey evidence in trademark disputes and highlights how a district court's de novo review can lead to a different outcome than the more deferential review of USPTO decisions in the Federal Circuit.
